United States District Court, D. Massachusetts
ORDER AND MEMORANDUM ON DEFENDANT'S MOTION TO
DISQUALIFY COUNSEL (DOCKET NO. 104)
TIMOTHY S. HILLMAN DISTRICT JUDGE.
Corporation (“Defendant”) moves, pursuant to the
Massachusetts Rules of Professional Conduct 3.7 and
Massachusetts Local Rule 83.6.1(a),  to disqualify Deetz Family,
LLC's (“Plaintiff”) attorney Eugene Winters
on the grounds that he will likely be a necessary witness at
trial. For the reasons that follow, Defendant's motion
(Docket No. 104) is denied.
J. Deetz, the sole inventor of U.S. Patent No. 5, 609, 788
(“Magnetic Paint Additive”, issued March 11,
1997) and U.S. Patent No. 5, 843, 329 (“Magnetic Paint
or Ink Additive”, issued December 1, 1998), assigned
his rights in both patents to Fibron, LLC on January 29,
2001. On April 20, 2005, Defendant and Fibron entered into a
License Agreement (the “Agreement”) that granted
Defendant non-exclusive rights to the patents and related
“Know-How” to manufacture, have made, and use and
sell, magnetic paint products. The terms of the Agreement
required Defendant to pay an up-front fee of $100, 000 USD
and royalties equaling 3% of net sales from April 20, 2005
until March 17, 2015 (the expiration date of the licensed
patents), and 2% of net sales from March 18, 2015 until March
17, 2020. The Agreement also provided for payment of a
minimum royalty of $20, 000 in 2006, $30, 000 in 2007, and
$40, 000 per year for the remaining years of the Agreement,
in the event that actual royalties calculated from net sales
fell below these thresholds.
February 15, 2006, Fibron assigned and transferred all of its
rights in the ‘788 and ‘329 patents, as well as
its rights in the Agreement, to Plaintiff. Defendant made the
$100, 000 up front payment and paid at least part of actual
royalties from 2006-2009, but from 2006-2010 did not pay the
minimum royalties required under the license. Without
notifying Plaintiff of any intent to terminate the Agreement,
Defendant ceased making payments in 2010, and did not respond
to Plaintiff's demand letters regarding royalty reports
and overdue payments in August and September of 2013. On
September 27, 2013, Plaintiff sent a letter notifying
Defendant that the License Agreement would be terminated on
October 27, 2013, and followed up with a letter on February
18, 2014 confirming termination of the Agreement.
alleges that Defendant continued to use Plaintiff's
“Know-How” to make and sell the licensed products
until March 17, 2015, after it stopped paying royalties and
in breach of the Agreement.
to the attorney-advocate rule, a lawyer cannot serve as
counsel at trial where it is likely he will be a necessary
witness. Mass. R. Prof. Conduct 3.7. The party seeking
disqualification has the burden of showing that the lawyer is
likely to be a necessary witness. A lawyer is deemed
necessary when “the proposed testimony is relevant,
material, not merely cumulative, and unobtainable
elsewhere.” Carta v. Lumbermens Mut. Cas. Co.,
419 F.Supp.2d 23, 29 (D. Mass. 2006) (citation omitted).
Defendant argues that Mr. Winters negotiated the Agreement
that forms the basis for the breach of contract action.
According to Defendant, Mr. Winter's role in these
negotiations renders him likely to be a necessary witness.
argument fails for two reasons. First, Defendant has not made
a sufficient showing that Mr. Winters was a participant in
negotiations. Defendant simply relies on the conclusory
allegation that “Mr. Winter negotiated the Agreement
that forms the basis for this breach of contract
action.” Plaintiff points out, however, that none of
the notes from the extensive negotiations mentions Mr.
Winters as a participant. To the contrary, they suggest that
Joe Deetz negotiated directly with Defendant.
even if Mr. Winters participated in the contract
negotiations, Defendant has failed to demonstrate that Mr.
Winters would be a necessary witness under Rule 3.7. Joe
Deetz and Neal Barry are available witnesses that
participated in the contract negotiations. Defendant has not
argued that their testimony will be inadequate or that Mr.
Winters has unique knowledge rendering his testimony
indispensable. Thus, while Mr. Winter's testimony would
be relevant and material, it is likely to be cumulative and
obtainable from Mr. Deetz and Mr. Barry.
reasons stated above, I find that Defendant has not satisfied
its burden of demonstrating that Eugene Winters is a
necessary witness within the meaning of Mass. R. Prof.